11408491 (B.P.A.I. Mar. 6, 2012)

Ex Parte Yoon

Board of Patent Appeals and InterferencesMar 6, 2012

11408491 (B.P.A.I. Mar. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/408,491 04/21/2006 Taeyong Yoon HSJ920050110US1 9530 45552 7590 03/07/2012 HITACHI C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVILLE, CA 95076 EXAMINER THOMAS, LUCY M ART UNIT PAPER NUMBER 2836 MAIL DATE DELIVERY MODE 03/07/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TAEYONG YOON ____________________ Appeal 2010-000842 Application 11/408,491 Technology Center 2800 ____________________ Before DEBRA K. STEPHENS, GREGORY J. GONSALVES, and BRUCE R. WINSOR, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000842 Application 11/408,491 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Introduction According to Appellant, the invention relates to a method for providing a bulk erase tool. A bulk erase tool is received. The bulk erase tool has a first polarity top main magnet, a first polarity bottom main magnet, a second polarity top main magnet and a second polarity bottom main magnet. At least one first polarity cancel magnet is provided at a portion of each of the second polarity top and bottom main magnets. Additionally, at least one second polarity cancel magnet is provided at a portion of each of the first polarity top and bottom main magnets. In so doing, the bulk erase tool field strength at a first portion of the bulk erase tool is reduced. (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. A method for providing a bulk erase tool having a portion of reduced field strength, comprising: receiving said bulk erase tool comprising a first polarity top main magnet, a first polarity bottom main magnet, a second polarity top main magnet and a second polarity bottom main magnet; and Appeal 2010-000842 Application 11/408,491 3 providing at least one first polarity cancel magnet at a portion of each of said second polarity top and bottom main magnets; and providing at least one second polarity cancel magnet at a portion of each of said first polarity top and bottom main magnets, said at least one first polarity cancel magnet at a portion of each of said second polarity top and bottom main magnets and said at least one second polarity cancel magnet at a portion of each of said first polarity top and bottom main magnets for reducing the bulk erase tool field strength at a first portion of said bulk erase tool. Prior Art Serizawa US 6,594,099 B2 Jul. 15, 2003 Objections The Drawings are objected to under 37 C.F.R. 1.83(a) for failing to show every feature specified in the Claims. The Drawings are objected to under 37 CFR 1.83(a) because they fail to show the polarities of the magnets 310, 320, 325, 315, and the directions of the flux lines in Figure 3A as described in the Specification. The Drawings are objected to under 37 CFR 1.83(b) for being incomplete. The Appellant presented the argument regarding the objection of drawings under 37 C.F.R. § 1.83(a) and 1.83(b) (App. Br. 9-11). Notwithstanding Appellant’s arguments, the objections relate to petitionable subject matter under 37 C.F.R § 1.181 and therefore, this matter is not before us since we lack jurisdiction over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also Appeal 2010-000842 Application 11/408,491 4 MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition….”). Rejections (1) Claims 1, 8, 15, and 20 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. (2) Claims 1-20 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Serizawa. ISSUE 1 35 U.S.C. § 112, second paragraph: claims 1, 8, 15, and 20 Appellant argues the Specification clearly shows the features at issue in the Figures and Specification (App. Br. 12). Further, Appellant contends it is well known magnets have two poles and thus, if one is oriented in a first polarity, the second must be oriented in the opposite orientation (App. Br. 12). As a result, according to Appellant, logic dictates the orientation of magnets with respect to one another (Reply Br. 3). In response, the Examiner maintains that given the recitation of first polarity top and bottom main magnets, second polarity top and bottom main magnet, first and second polarity cancel magnets, and such, it is unclear as to the orientation of the orientation of the magnetic poles of the magnets (Ans. 5). This confusion, according to the Examiner, is due to three-dimensional space and the various orientations the magnetic poles could be (id.). Appeal 2010-000842 Application 11/408,491 5 Issue 1: Has the Examiner erred in concluding that independent claims 1, 8, 15, and 20 are being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention? ANALYSIS A patent specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. This requirement is satisfied where “one skilled in the art would understand the bounds of the claim when read in light of the specification . . . .” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). We agree with the Examiner’s conclusion (Ans. 8-9) that given the claim recitation, the claim subject matter to which Appellant regards as the invention is indefinite. Appellant’s invention as recited in independent claims 1, 8, 15, and 20, does not recite structural relationships between the various magnets. As a result, it is unclear what the relationship is between the various magnets and how they interact. Therefore, we conclude the invention as recited in claim 1 and commensurately recited in claims 8, 15, and 20 is indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Accordingly, the Examiner did not err in concluding the invention as recited in claims 1, 8, 15, and 20 is indefinite under 35 U.S.C. § 112, second paragraph. Appeal 2010-000842 Application 11/408,491 6 ISSUE 2 35 U.S.C. § 102(a): claims 1-20 Appellant argues their invention is not anticipated by Serizawa (App. Br. 14-15). Appellant contends the plate members 120 and 121 of Serizawa are not needed to reduce the adverse effects of leaked magnetic flux since if the claimed features were anticipated, the adverse effects would have already been reduced (Reply Br. 4). Issue 2: Has the Examiner erred in finding Serizawa discloses the invention as recited in independent claim 1? ANALYSIS Based upon Appellant’s arguments, we select representative claim 1 to decide this appeal for the group consisting of claims 1-20. (See App. Br. 14-15). We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Initially we note the phrase “for reducing the bulk erase tool field strength at said first portion of said bulk erase tool” recited in independent claim 1is a statement of intended use. A statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We note that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements Appeal 2010-000842 Application 11/408,491 7 usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often […] appear in the claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. Appellant’s claimed method does not describe steps performed by the bulk erase tool itself but instead recites receiving a bulk erase tool with a specific structure. No function of the bulk erase tool or any portion thereof is recited. Nor is any relationship between the top and bottom main magnets recited. In light of this, the recited “for reducing the bulk erase tool field strength at a first portion of said bulk erase tool” is a statement of intended use. Based upon our review of the record, and to the extent that we understand the scope of the claim in light of the indefiniteness as discussed above, we find Appellant has failed to present substantive arguments supported with specific factual evidence of sufficient character and weight to persuade us of error regarding the Examiner’s findings of fact. Indeed, Appellant has, for example, underlined limitations in the recited claim without providing any explanation as to why the portions of Serizawa cited by the Examiner and the Examiner’s findings are in error (see App. Br. 14). Accordingly, Appellant has not persuaded us that the Examiner erred in finding Serizawa discloses the invention as recited in independent claim 1 and commensurately recited in independent claims 8, 15, and 20. Dependent claims 2-7, 9-14, and 16-19 fall with their respective independent claims. Therefore, the Examiner did not err in rejecting claims 1-20 under 35 U.S.C. § 102(a) for anticipation by Serizawa. Appeal 2010-000842 Application 11/408,491 8 DECISION The Examiner’s rejection of claims 1, 8, 15, and 20 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is affirmed. The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 102(a) as being anticipated by Serizawa is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED ke